USPTO Proposes New Rules Intended to Streamline Appeals to the BPAI

In recent years, the Board of Patent Appeals and Interferences (BPAI or Board) has seen a tremendous influx in the number of appeals being filed and a growing backlog of cases to be decided. In response, the Office is struggling for ways to streamline the appeal process without sacrificing decision quality.

The USPTO has now issued a new set of proposed rules for proceedings in Ex Parte Appeals before the Board. This new set of rules is a major complete revision of the BPAI rules that had been proposed in 2008 and should be seen as operating in parallel to ongoing changes-in-practice at the BPAI announced earlier in 2010.

The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.

Once it takes jurisdiction, a procedural remand of the case would require Director's approval.

The Board will presume that all pending claims under rejection are being appealed.

The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).

An examiner's answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.

6 has been in a particularly bad mood lately. I guess that big job at his uncle’s cousin’s start up fell through. The crushing realization that his highest career goal is now to become a WQAS has started to sink in.

“An examiner’s answer that includes a rejection based on new evidence will be designated as a new ground of rejection…”

Hope they clarify what is considered new evidence. Presenting new art I can buy as new evidence. Pointing to a previously uncited section of the same reference used in the rejection in rebuttal to applicant’s argument to clarify a rejection already made using said art, hopefully will not be considered new evidence.

“The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.”

My experience is pretty much in line with what someone else pointed out above. Examiners are already discouraged from responding to reply briefs other than to say it’s been noted and the case is forwarded to the Board.

Doesn’t matter if a brand new argument which raises new issues is presented in the reply brief and I want to respond. Despite arguments from me otherwise, my SPE has told me to send it to the Board without addressing the new arguments and if the Board wants me to respond to the new argument, they’ll send it back.

“They need a rule that if the BPAI finds the examiner is wrong to a point of negligence, he/she pays the applicant’s legal costs. A failure to make the finding is appealable to CAFC. ”
translated: “The examiner attrition rate just isn’t high enough. I love backlogs.”

And of course the stats don’t take into account the cases where the panel issues its “proceed to the BPAI” decision and then after the brief is filed, prosecution is re-opened. That happens in about 25% of the “proceed to BPAI” decisions.

The Board should take jurisdiction as soon as the appeal brief is filed. No re-opening. Negative impact on primary and SPE ratings for reversals. Same with useless quality assurance do nothing types. Positive impact on ratings for affirmances. No impact on junior examiner ratings.

I never spoke with a Jack McCombs.. EVER. I never sent drawings to a Jack McCombs.
I also can prove that the drawings I sent KT, are in the Files. He said he never got the Drawings or the Check.. But they have been doctored. There are things on it I can prove I did not put on them. Is that creep enough for YAH?

I did have an Examiner cite 7 new references in an Examiner’s Answer (in support of an enablement rejection) without calling it a new ground of rejection. The last thing we wanted was to reopen prosecution, though, so we were happy to proceed to the Board and had enough evidence of record already to support our position.

For the most part, I wish the Briefs I am working on now would fall under these proposed rules. Here’s my review:

“The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).”

If that means I don’t have to prepare an Appeal Brief and that the Board will simply review the gibberish in the last office action and my reply thereto and that I don’t have to identify support in the specification for each claim being appealed, it sounds perfect.

“•The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.”

Little effect. We’re already discouraged to respond.

“•Once it takes jurisdiction, a procedural remand of the case would require Director’s approval.”

That would probably be a great thing. He doesn’t have time to go over all those kick backs for new IDS’s etc. etc. etc. etc. etc.

“•An examiner’s answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner’s failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.”

Lulz, I’m pretty sure that if you use new evidence it already is considered a new grounds of rejection. Unless we’re perhaps talking about the examiner providing support for an inherency position taken in the previous rejection which the applicant is just now arguing or something of that nature.

The petition part is just… um, why give people another way to delay prosecution? Seems like it would be seldom used anyway, most spes can at least tell when there is new evidence being used and would make them designate it as a new grounds anyway I imagine.

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